I recently interviewed my fellow UDRP panelist Professor Andrew Christie, chair of intellectual property at Melbourne Law School. He created the “passive holding” doctrine in only the second decision ever published under the UDRP, in 2000. The case, Telstra v. Nuclear Marshmallows, is truly a landmark decision because it addressed how a domain name not associated with an active website could be considered that it “is being used in bad faith,” as the UDRP requires.
In reflecting on this important decision almost 25 years later, Prof. Christie explains that he realized the importance of his analysis at the time and how it could impact the effectiveness of the UDRP as a tool to combat cybersquatting.
“If the policy was not able to apply to this sort of scenario” – in which a domain name was not used in connection with a live website – “then it was not going to be able to apply to a whole vast number of these scenarios, because a sensible cybersquatter would simply register and not do anything,” Prof. Christie says.
The Telstra v. Nuclear Marshmallows decision laid out five factors that Prof. Christie considered relevant in assessing whether the passive holding of a domain name could be considered bad faith, including the strength of the complainant’s trademark and whether there is “any actual or contemplated good faith use” of the domain name. But he also admits that he was not trying to establish a test for the ages.
“I wasn’t trying to be like the U.S. Supreme Court and lay down a principle for all time for every other panelist to follow,” Prof. Christie says. “I was doing what we were supposed to do, which is to decide the case before one using principles that others are going to have to use but deciding it on the facts that were relevant to me.”
In addition to discussing the Telstra v. Nuclear Marshmallows decision in this interview, Prof. Christie also explains how he was selected by WIPO as one of the original panelists for the UDRP, how the UDRP has successfully addressed issues (such as phishing) that were essentially unknown when it was created, and how well the UDRP has withstood the test of time as what he calls “an unbelievably, fortuitously and very insightfully designed process.”
